adr

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Ticket Software LLC v. MRWFX Inc.

Case No. D2011-0721

1. The Parties

The Complainant is Ticket Software LLC of Vernon, Connecticut, United States of America, represented internally.

The Respondent is MRWFX Inc. of Lilburn, Georgia, United States of America, represented internally.

2. The Domain Name and Registrar

The disputed domain name <ticketsnetwork.com> is registered with Wild West Domains, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 21, 2011. On April 27, 2011, the Center transmitted by email to Wild West Domains, Inc. a request for registrar verification in connection with the disputed domain name. On April 28, 2011, Wild West Domains, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an Amended Complaint on May 4, 2011. The Center verified that the Amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 6, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was May 26, 2011. On May 11, 2011, the Respondent provided the Center with an online submission. The Center requested the Respondent to confirm that such submission was to be regarded as the Respondent’s complete Response and indicated that if such confirmation was not received by the Response due date, the Center would consider the aforementioned communication as the Response. The Respondent did not reply to this communication and accordingly, the Center informed parties on May 27, 2011, that it would proceed to appoint the Panel.

The Center appointed William R. Towns as the sole panelist in this matter on June 3, 2011. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

The Complainant is the owner of the trademark TICKETNETWORK, registered with the United States Patent and Trademark Office (USPTO) in connection with software for managing the buying and selling of entertainment tickets, and with an online marketplace for buyers and sellers of entertainment tickets. The Complainant’s mark was registered by the USPTO on its principal register on May 31, 2005. The Complainant provides ticket exchange services on its TicketNetwork website (“www.ticketnetwork.com”), providing primarily tickets for various entertainment and sporting events. According to the website, the Complainant was founded in 2002 as a software company.

The Respondent registered the disputed domain name <ticketsnetwork.com> on September 1, 2002, according to the concerned Registrar’s WhoIs records. The disputed domain name presently resolves to a website containing search categories and advertising links to third party websites featuring content related to tickets, travel, finance, computers, tickets and other topics. The “tickets” search heading generates links to some websites where Internet visitors can purchase, inter alia, tickets to sporting and entertainment events.

5. Parties’ Contentions

A. Complainant

The Complainant asserts that the disputed domain name is confusingly similar to the Complainant’s registered TICKETNETWORK mark. According to the Complainant, the Respondent intentionally is using a confusingly similar name to divert traffic to the Respondent’s website, which contains links to ticket providers. The Complainant maintains that the Respondent’s use of the disputed domain name as a repository for links to third party websites offering entertainment and sporting tickets creates a likelihood of confusion, and infringes upon the Complainant’s rights in the TICKETNETWORK mark. Accordingly, the Complainant asserts that the Respondent lacks rights or legitimate interests in the disputed domain name, and that the Respondent has registered and is using the disputed domain name in bad faith.

B. Respondent

The Respondent maintains that it registered the disputed domain name in September 2002 intending to establish a travel web site for consumers to purchase airline tickets and make other travel accommodations. According to the Respondent, a search of the USPTO website prior to registering the disputed domain name revealed no reason for concern as to any conflict.

The Respondent observes that the disputed domain name was registered approximately 8 months prior to the Complainant’s filing of its trademark application with the USPTO, and that the USPTO did not issue a registration certificate for the Complainant’s TICKETNETWORK mark until May 31, 2005. The Respondent further contends that the Complainant’s TICKETNETWORK mark is not a well-known mark.

The Respondent asserts that its website is still in the early developmental stages and has been parked to measure traffic while the viability of establishing a web presence is considered. The Respondent states that it has minimal control over the content displayed on the website but has attempted to give the website the look and feel of a travel website consistent with the Respondent’s original intentions. According to the Respondent, any similarity of its website to the Complainant’s website is unintentional and purely coincidental.

The Respondent avers that it does not directly offer entertainment tickets for sale on its website. The Respondent calls attention to a disclaimer on its website that reads: “The registrant of this domain maintains no relationship with third party advertisers that may appear on this website. Reference to or the appearance of any particular service or trademark is not controlled by registrant and does not constitute or imply its association, endorsement or recommendation.”

In view of the foregoing, the Respondent urges that the Complainant has failed to prove that the disputed domain name is identical and/or confusingly similar to the Complainant’s mark, that any Internet traffic has been diverted to the Respondent’s website, and that there is no evidence that the disputed domain name infringes upon the Complainant’s mark. The Respondent asserts that it has rights and a legitimate interest in maintaining ownership of the disputed domain name.

6. Discussion and Findings

A. Scope of the Policy

The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store,
WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”. Weber-Stephen Products Co. v. Armitage Hardware,
WIPO Case No. D2000-0187. See Final Report of the WIPO Internet Domain Name Process, paragraphs 169 and 170.

Paragraph 15(a) of the Rules provides that the Panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable.

Paragraph 4(a) of the Policy requires that the Complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:

(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) The Respondent has no rights or legitimate interests with respect to the disputed domain name; and

(iii) The disputed domain name has been registered and is being used in bad faith.

Cancellation or transfer of the disputed domain name is the sole remedy provided to the Complainant under the Policy, as set forth in paragraph 4(i).

Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a disputed domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.

Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in the disputed domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily if not exclusively within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) shifts the burden to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc.,
WIPO Case No. D2000-0270.

B. Identical or Confusingly Similar

The Panel finds for purposes of paragraph 4(a)(i) of the Policy that the disputed domain name <ticketsnetwork.com> is confusingly similar to the Complainant’s TICKETNETWORK mark. The first element of the Policy operates essentially as a standing requirement. The threshold inquiry under the first element is largely framed in terms of whether the mark and domain name, when directly compared, are identical or confusingly similar. See Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale,
WIPO Case No. D2000-0662. This is commonly tested by comparing the mark and the disputed domain name in appearance, sound, meaning, and overall impression. Mile, Inc. v. Michael Burg,
WIPO Case No. D2010-2011.

In this instance, the disputed domain name differs from the Complainant’s mark only in the use of the plural “tickets” instead of the singular “ticket”. This slight difference does not serve to dispel Internet user confusion when the disputed domain name and the mark are compared under the standard identified above. Based on a comparison of the Complainant’s mark and the disputed domain name, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s mark.

Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.

C. Rights or Legitimate Interests

As noted above, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of rights or legitimate interests in a disputed domain name. The Panel is persuaded from the record of this case that a prima facie showing under paragraph 4(a)(ii) has been made. The disputed domain name is confusingly similar to the Complainant’s mark. The Respondent is using the disputed domain name to attract Internet users to parked website featuring paid advertising links, some of which resolve to third party websites selling entertainment tickets in competition with the Complainant. There is no indication that the Respondent has been commonly known by the disputed domain name, and it is undisputed that the Respondent has not been authorized by the Complainant to use the Complainant’s mark.

Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights to or legitimate interests in the disputed domain names by demonstrating any of the following:

(i) before any notice to it of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or

(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

As noted above, the Respondent asserts that it registered the disputed domain name in September 2002, with the intent of establishing a travel website for consumers to purchase airline tickets and make other travel accommodations. Curiously, however, some nine years later the Respondent claims that the website is still in the early developmental stages and has been parked to measure traffic while the viability of establishing a web presence is considered.

The Panel discounts these unsubstantiated assertions. The Respondent has provided no evidence of demonstrable preparations prior to notice of this dispute to use the disputed domain name with a travel website. The Panel also questions why the website would still be in “the early developmental stages” after nine years. The Panel is more inclined to believe that the Respondent acquired the disputed domain name for monetization purposes – i.e., to generate paid advertising revenues or hold the disputed domain name for eventual sale. In addition to the advertising links on the Respondent’s website, a secondary page also provides a means through which offers to purchase the domain name can be submitted.

None of this, however, is dispositive of whether the Respondent can demonstrate rights or legitimate interests in the disputed domain name. Neither offering a domain name for sale nor registering and using a domain name to generate paid advertising revenues is per se a violation of the Policy. A number of UDRP panels have concluded that a respondent has a right to register and use a domain name to attract Internet traffic based on the appeal of a commonly used descriptive phrase, even where the domain name is confusingly similar to the registered mark of a complainant, at least in circumstances indicating that the respondent was not aware or reasonably should not have been aware of the complainant’s rights in the mark. See, e.g., National Trust for Historic Preservation v. Barry Preston,
WIPO Case No. D2005-0424.

Thus, where a respondent registers a domain name consisting of “dictionary” terms because the respondent has a good faith belief that the domain name’s value derives from its generic or descriptive qualities, the use of the domain name consistent with such good faith belief may establish a legitimate interest. See Mobile Communication Service Inc. v. WebReg, RN,
WIPO Case No. D2005-1304. But the domain name must have been registered because of, and any use consistent with, its attraction as a dictionary word or descriptive term, and not because of its value as a trademark. Media General Communications, Inc. v. Rarenames, WebReg,
WIPO Case No. D2006-0964. See also Asian World of Martial Arts Inc. v. Texas International Property Associates,
WIPO Case No. D2007-1415; HSBC Finance Corporation v. Clear Blue Sky Inc. and Domain Manager,
WIPO Case No. D2007-0062.

A number of UDRP panels, including this Panel, also recognize that paragraph 2 of the Policy requires registrants to make reasonable efforts to ensure they are not infringing upon third-party rights. See, e.g., Terroni Inc. v. Gioacchino Zerbo,
WIPO Case No. D2008-0666. The Respondent maintains that it did so in this case. The Panel notes that at the time the Respondent registered the disputed domain name in early September 2002, the Complainant had yet to file its application with the USPTO seeking to register its mark. The USPTO did not issue a registration certificate for the Complainant’s mark until March 2005. According the Complainant’s website, the Complainant was initially founded in 2002 as a computer software company. Further, the Complainant has provided no information shedding any light on when the Complainant first launched the ticket exchange service on its website.

Assuming that the Respondent conducted a search of the USPTO trademark database before registering the disputed domain name, it is clear that such a search would not have disclosed the Complainant’s mark. Nor, based on the record before this Panel, can it be said with any certainty that an Internet search would have alerted the Respondent to the Complainant or the Complainant’s asserted rights in the TICKETNETWORK mark. As noted above, the Panel has no means of determining from the record how long the Complainant has had a web presence, and the Complainant’s own website indicates it was not founded until 2002, and then as a software development company.

In addition, the TICKETNETWORK mark when used with the Complainant’s online ticket exchange service does not have a high degree of inherent distinctiveness, and to some degree might be considered descriptive in relation to that business. The Policy was not intended to permit a party who elects to register or use a common term or terms as a trademark to bar others from using the common term in a domain name, unless it is clear that the use involved is seeking to capitalize on the goodwill created by the trademark owner. See Match.com, LP v. Bill Zag and NWLAWS.ORG,
WIPO Case No. D2004-0230. See also National Trust for Historic Preservation v. Barry Preston, supra.

In the circumstances of this case, it is not clear that the Respondent registered the disputed domain name seeking to capitalize on the goodwill associated with the Complainant’s mark. And while the Respondent is using the disputed domain name to attract Internet users to a website with advertising links to online ticket providers, this is not inconsistent with the use of the disputed domain name in a descriptive sense. Regardless, in view of the Panel’s findings under the following heading, it is unnecessary for the Panel to decide the issue regarding the Respondent’s rights or legitimate interests under paragraph 4(a)(ii) of the Policy.

D. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of respondent’s documented out-of-pocket costs directly related to the domain name; or

(ii) circumstances indicating that the respondent registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or

(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location.

The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows,
WIPO Case No. D2000-0003. The overriding objective of the Policy is “to curb the abusive registration of domain names in the circumstances where the registrant is seeking to profit from and exploit the trademark of another”. Match.com, LP v. Bill Zag and NWLAWS.ORG, supra. Nevertheless, it is paramount that panels decide cases based on the very limited scope of the Policy. Id. The Policy provides a remedy only in cases where the complainant proves that the domain name “has been registered and is being used in bad faith”.

After careful consideration of the totality of facts and circumstances in the record, the Panel finds that the Complainant has not satisfied its burden of demonstrating that the Respondent registered the disputed domain name in bad faith. For the reasons discussed under the preceding heading, the Panel is unable to conclude based on the record before it that the Respondent registered the disputed domain name seeking to profit from and exploit the Complainant’s trademark rights.

Accordingly, the Panel finds that the Complainant has failed to satisfied the requirements of paragraph 4(a)(iii) of the Policy.